national arbitration forum

DECISION

State Farm Mutual Automobile Insurance Company v. ABCDriver Education

Claim Number:  FA0412000381219

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), One State Farm Plaza, A-3, Bloomington, IL 61710.  Respondent is ABCDriver Education (“Respondent”), 2207 Shoma Drive, Wellington, FL 33414.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <statefarmdrivingtest.com>, <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2004.

On December 14, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <statefarmdrivingtest.com>, <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@statefarmdrivingtest.com, postmaster@statefarmdrivingschool.com, postmaster@statefarmifr.com, and postmaster@statefarminsurancetest.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On January 14, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <statefarmdrivingtest.com>, <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> domain names are confusingly similar to Complainant’s STATE FARM mark.

2. Respondent does not have any rights or legitimate interests in the <statefarmdrivingtest.com>, <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> domain names.

3. Respondent registered and used the <statefarmdrivingtest.com>, <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, State Farm Mutual Automobile Insurance Company, conducts business in the insurance and financial services industries.  In 1999, Complainant opened a federally chartered bank known as State Farm Bank. 

Complainant first began using the STATE FARM mark in 1930.  Complainant registered the STATE FARM mark with the United States Patent and Trademark Office on June 11, 1996 (Reg. No. 1,979,585).  Complainant has spent substantial time, effort and funds to develop the goodwill associated with its STATE FARM mark.  Complainant also promotes traffic accident and vehicle safety information and numerous other educational and learning resources to keep its insured drivers and passengers safe.  In addition, Complainant is a founding member of the Insurance Institue for Highway Safety and strongly supports “Partners for Child Passenger Safety.” 

Furthermore, Commplainant began to develop its web presence in 1995 when it registered the <statefarm.com> domain name.  Complainant uses this website to offer detailed information regarding its insurance and financial products and services, consumer information and information about Complainant’s independent contractor agents.  The website also contains links to information about vehicle safety, child passenger safety, driver behavior and vehicle safety discounts. 

Respondent registered the <statefarmdrivingtest.com> domain name on March 24, 2004.  On April 19, 2004, Complainant’s Intellectual Property Administrator sent a cease and desist letter to Respondent via certified mail.  Respondent contacted Complainant regarding the letter but later registered the <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> domain names on April 26, 2004.  All of the domain names resolve to a parking page for the registrar, Go Daddy Software, Inc. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the STATE FARM mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last seventy-five years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that Respondent has the burden of refuting this assumption).

The <statefarmdrivingtest.com>, <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> domain names registered by Respondent are confusingly similar to Complainant’s STATE FARM mark because the domain names incorporate Complainant’s mark in its entirety, deviating only by the addition of the generic or descriptive terms “driving,” “test,” “school,” or “insurance” or the letter combination “ifr.”  Furthermore, several of these terms are related to Complainant’s products and services in the areas of insurance and finance.  Therefore, the Panel finds that the mere addition of generic or descriptive terms or letter combinations to Complainant’s registered mark is insufficient to negate the confusing similarity of the disputed domain name.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names, which contain an identical version of Complainant’s STATE FARM mark.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  However, Respondent has failed to respond to the Complaint, so the Panel assumes that Respondent lacks rights and legitimate interests in the disputed domain names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

The disputed domain names registered by Respondent resolve to parking pages for the registrar.  According to the Complaint, Respondent has not made any use of the disputed domain names.  Pursuant to Policy ¶¶ 4(c)(i) and (ii), the Panel finds that Respondent lacks rights and legitimate interests in domain names that infringe upon Complainant’s famous STATE FARM mark where Respondent has failed to make any use of the domain names.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Additionally, no evidence in the record suggests that Respondent is commonly known by the disputed domain names and Respondent has provided no proof to establish rights or legitimate interests in the disputed domain names.  Furthermore, there is no relationship between Complainant and Respondent and Complainant has not authorized Respondent to use its STATE FARM mark in any way.  Therefore, the Panel concludes that Respondent has not established that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

While Policy ¶ 4(b) lists four circumstances which constitute evidence of bad faith registration and use if they are found to be present, this list is not intended to be a limitation on finding evidence of bad faith registration and use.  In fact, additional factors can be used by the Panel to support findings of bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

It does not appear from the record that Respondent has made any use of the four disputed domain names that contain entire versions of Complainant’s registered STATE FARM mark and merely resolve to a parking page for the registrar.  However, even if Respondent posted information related to the generic terms in the domain names, such content associated with a domain name containing Complainant’s mark would be in conflict with information provided by Complainant on the same topics.  Thus, the Panel finds evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii) despite the fact that there appears to have been no use of the domain names, because the Panel cannot conceive of any use that would not equate to bad faith in this circumstance.  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “[i]t makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Respondent registered four domain names that incorporate Complainant’s STATE FARM mark in its entirety, adding only generic or descriptive terms or letter combinations.  Furthermore, Complainant’s registration of its mark with the USPTO confers constructive knowledge on anyone attempting to register the mark.  This suggests that Respondent knew of Complainant’s rights in the STATE FARM mark.  Additionally, Respondent registered the <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> domain names after Complainant had sent a cease and desist letter to Respondent concerning the <statefarmdrivingtest.com> domain name.  Thus, the Panel finds that Respondent chose the disputed domain names based on the distinctive and well-known qualities of Complainant’s mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <statefarmdrivingtest.com>, <statefarmdrivingschool.com>, <statefarmifr.com> and <statefarminsurancetest.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  January 28, 2005

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